Allan Menezes v Gyrotonic Sales Corporation

[2006] ATMO 2

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Opposed application by Gyrotonic Sales Corporation under section 92 to remove 752769(41) GYROTONICS registered in the name of Allan Menezes.

Delegate:	Ian Thompson
Representation:	Applicants: Simon Williams of Spruson & Ferguson
Opponent:  Carmen Champion instructed by Hodgkinson McInnes Pappas
Decision:	s92 proceedings – onus on owner of trade mark to show bona fide intention to use and use within relevant period – use of trade mark within relevant period not established. Costs ordered against the opponent.

Background

1. Allan Menezes (‘the owner’ or ‘the opponent’) of North Sydney, New South Wales, owns a registered trade mark, current details of which are:

   App No:  752769

   Registered from:  16 January 1998

   Services:Class: 41 Exercise and fitness programme services

   Trade Mark:  GYROTONICS
     (‘the registered trade mark’)

2. On 10 March 2003, Gyrotronic Sales Corporation (‘the applicant’) filed application under section 92(4)(b) of the Trade Marks Act 1995 (‘the Act’) claiming that during the period 10 February 2000 until 10 February 2003 the registered trade mark was not used or used in good faith by either the owner or an authorised user. 

3. On 27 April 2004, Gyrotronic Sales Corporation filed a second application for removal under section 92(4)(a) of the Act claiming that on the date that the application was filed, the applicant for registration had no intention in good faith to use, or to authorize the use of, the trade mark or to assign the trade mark to a body corporate.

4. On 14 April 2004 and 4 June 2004 respectively, Allan Menezes, filed notices of opposition to the removal of the registered trade mark alleging that the applicant for removal was not a person aggrieved and that the registered trade mark had been used within the relevant period and it had been used in good faith.

5. The parties have both served and filed evidence as allowed by the Act and regulations thereto.

6. As a delegate of the Registrar of Trade Marks, I heard the matters concurrently at a hearing in Sydney on 20 October 2005.  Simon Williams of Spruson & Ferguson appeared for the applicant.  Carmen Champion instructed by Hodgkinson McInnis Pappas appeared in person for the opponent.

   Evidence and discussion

7. Evidence served and filed in relation to these proceedings comprises:

Declarant	Occupation Known As	Date made	Exhibits
Evidence in Support
Allan Menezes	Pilates Instructor ‘Menezes’	13 October 2003	AM-1 to AM-3
Evidence in Answer
Michael Anthony Rumore	Investigator ‘Rumore’	8 April 2004	A to F
Simon Dudley Williams	Solicitor ‘Williams 1’	15 April 2004	A to Z, AA to CC, DD to LL, NN to XX
Matt Aversa	Company Secretary ‘Aversa 1’	21 June 2004	A to P
Matt Aversa	Company Secretary ‘Aversa 2’	23 July 2004
Simon Dudley Williams	Solicitor ‘Williams 2’	21 October 2005	A

1. This decision is about exercise programs and machines, especially those related to Pilates.  Pilates is a particular exercise regime devised in the 1920s by Joseph H. Pilates who was born in Germany and lived in New York.  The exercise regime has become quite popular and is widely available from a number of different people and organizations.

2. In 1999, Allan Menezes (the opponent) went to New York to be trained as a trainer in a Pilates-related fitness course called GYROTONICS which based around a particular exercise machine which is called a GYROTONICS machine.  This training was provided by Juliu Horvath who devised the machine and the exercise regime which is based around it.  I understand from the evidence that Juliu Horvath has some relationship with the applicant for removal, although the exact nature of the relationship does not clearly emerge from the evidence.

3. In 1998, the opponent bought one of the GYROTONICS exercise machines from New York.  I would gather that the purchase was from the opponent or Mr Horvath (although this does not emerge from the evidence), and the opponent imported the machine into Australia.  On 16 January 1998, the opponent registered the trade mark GYROTONICS trade mark in Australia for ‘Exercise and fitness programme services’ (‘the nominated services’).

4. Put baldly, the opponent claims that his evidence shows that he has used the registered trade mark GYROTONICS in good faith and in relation to the nominated services within the period 10 February 2000 until 10 February 2003.  The applicant claims that the evidence shows that the opponent did not have an intention to use the registered trade mark in good faith and has not used the trade mark within the period 10 February 2000 until 10 February 2003.

5. The opponent has adduced evidence which is said to show the use of the registered trade mark and the applicant debates this and has provided evidence which is said to cast doubt on this.

6. The first plank in the bridge the applicant seeks to build is the declaration by Michael Anthony Rumore, a licensed enquiry agent who spent some time from January 2003 investigating whether the trade mark was used by the opponent.  On 29 January 2003, Mr Rumore attended at The Pilates Institute of Australia (of which the opponent is a principal) at North Sydney.  Mr Rumore was informed by administrative staff that the opponent was absent overseas, that the opponent had imported the GYROTONICS exercise machine from the USA about 8 years previously, that it is on the premises and that the machine was not intended for resale but was for use with the Pilates exercises provided to clients of The Pilates Institute of Australia.

7. Mr Rumore on that occasion collected brochures and literature from The Pilates Institute of Australia premises at North Sydney and subsequently did the same, (on 31 January 2003) at The Pilates Institute of Australia in Bondi Junction.  In none of the brochures, promotional literature or businesses cards collected by Mr Rumore (and exhibited to his declaration) is there mention of the trade mark GYROTONICS.

8. Mr Rumore avers that he had telephone conversations with the opponent on 11 and 19 February 2003.  The effect of these conversations is to confirm that the opponent imported a GYROTONICS exercise machine in about 1998 and to suggest that the machine is for use in conjunction with Pilates exercises but not as a stand-alone series of exercises.

9. Mr Rumore avers that the opponent told him that the GYROTONICS exercise machine is so specialized that he (the opponent) had never had any literature printed up about it apart from a remark on a website on the Internet.  The information at that stage on the website, related to the opponent or his company and mentioned “GYROTONIC expansion system – the art of exercising by Juliu Horvath”.

10. Mr Rumore avers that on none of the signage, posters or brochures in The Pilates Institute of Australia did the trade mark GYROTONICS appear.

11. Mr Williams’ declaration brings into evidence correspondence between Ladas & Parry, New York (trade mark attorneys for the applicant) and the opponent; correspondence between Hodgkinson McInnis Pappas and Spruson & Ferguson; and correspondence between the applicant and opponent.

12. Relevantly, in these documents, the opponent offers to settle a domain name dispute with applicant for consideration which ranges from the provision of equipment and training through to a sum of $75,000.  There is another offer to transfer ownership of the trade mark registration for $9,000.  A letter from Hodgkinson McInnis Pappas to Spruson & Ferguson claims that their client or associated companies is infringing their client’s trade mark and foreshadows possible legal proceedings and another which states that “Revenue from services provided under the trade mark … well exceeds A$500,000 per year”.

13. However, the opponent himself appears to dispute this figure.  In his declaration, the opponent states that revenue under the trade mark is $100,000 per annum.

14. Evidence which is said to be documentary support for the use of the trade mark is appended to the opponent’s declaration in support of the opposition: a brochure relating to a Pilates training course on 7 November 1999 (before the relevant period 10 February 2000 until 10 February 2003) states that “Allan also teaches the Gyrotonics® method in Sydney”.  Another brochure which is undated states, “Allan also teaches the Gyrotonics® Method of Body Movement in Sydney”.  Another brochure, or single page flier, dated January 2000 outlines Gyrotonics at North Sydney.

15. The opponent further claims to have developed the GYROTONICS method into something other than the course in which he was instructed in New York and into a course of his own devising.

    Reasons

16. Section 92 relevantly provides:

    92  Application for removal of trade mark from Register etc.

    (1)A person aggrieved by the fact that a trade mark is or may be registered may, subject to subsection (3), apply to the Registrar for the trade mark to be removed from the Register.

    (2)The application:

    (a)must be in accordance with the regulations; and

    (b)       may be made in respect of any or all of the goods and/or services in respect of which the trade mark may be, or is, registered.

    (3)An application may not be made to the Registrar under subsection (1) if an action concerning the trade mark is pending in a prescribed court, but the person aggrieved may apply to the court for an order directing the Registrar to remove the trade mark from the Register.

    Note:For prescribed court see section 190.

    (4)An application under subsection (1) or (3) (non‑use application) may be made on either or both of the following grounds, and on no other grounds:

    (a)       that, on the day on which the application for the registration of the trade mark was filed, the applicant for registration had no intention in good faith:

    (i)to use the trade mark in Australia; or

    (ii)to authorise the use of the trade mark in Australia; or

    (iii)to assign the trade mark to a body corporate for use by the body corporate in Australia;

    in relation to the goods and/or services to which the non‑use application relates and that the registered owner:

    (iv)has not used the trade mark in Australia; or

    (v)has not used the trade mark in good faith in Australia;

    in relation to those goods and/or services at any time before the period of one month ending on the day on which the non‑use application is filed;

    (b)       that the trade mark has remained registered for a continuous period of 3 years ending one month before the day on which the non‑use application is filed, and, at no time during that period, the person who was then the registered owner:

    (i)used the trade mark in Australia; or

    (ii)used the trade mark in good faith in Australia;

    in relation to the goods and/or services to which the application relates.

    Note:For file see section 6.

17. It is a threshold requirement that the applicant for removal be a person aggrieved by the registration which it seeks to remove from the register of trade marks.  In Kowa Company Ltd v N V Organon [2005] FCA 1282, Lander J stated:

    It is for the applicant to establish that it is a person aggrieved.

    The time at which the applicant must be a person aggrieved is at the date of the application: Ritz Hotel[1] at 255. However, McLelland J said:

    ‘If an applicant were, relevantly, a "person aggrieved" at the commencement of the proceedings but had ceased to be so at the time of the hearing, the court would in my opinion have power to grant the application, assuming a case for relief to have been otherwise made out, although it might decline to do so on discretionary grounds: cf Motor Terms Co Pty Ltd v Liberty Insurance Ltd (1967) 116 CLR 177 at 194-5 in respect of somewhat analogous circumstances in a winding up application.’

    [1] The Ritz Hotel Ltd v Charles of the Ritz Ltd (1987) 88 ALR 217

18. The letters in evidence between Ladas & Parry and the opponent and between Hodgkinson McInnis Pappas and the applicant make serious allegations about the behaviour of both parties to this matter as regards both this trade mark and a domain name and the legal consequences of their use, such as the foreshadowed infringement action which I have mentioned.  I consider that the correspondence emanating from Hodgkinson McInnis Pappas is, on its own, sufficient to give the applicant the necessary locus.

19. I will discuss the ground under section 92(4)(b) first. It appears to be logical to first consider whether there has been any use of the trade mark during the relevant period.

20. The onus of establishing use during the relevant period lies on the opponent who is the owner of the registration in these proceedings.

21. Documentary support for the opponent’s claims of use of the trade mark consists of two brochures from before the relevant period and one which is undated.  The amounts said to be revenue from services performed under the trade mark range from the opponent’s own claim of $100,000 per annum since 1999 through to a claim of $500,000 a year by his attorney.  There are no receipts or invoices in evidence for services performed under the trade mark.  Thus, the evidence which is said to be evidence of use of the trade mark is slightly elusive – however, it is said by the applicant to be there.  Certainly, when reading the cease and desist letters from Ladas & Parry, written on behalf of the applicant, that firm seems to have been sure that the opponent was using the registered trade mark.  The firm Hodgkinson McInnis Pappas seems to have been equally certain (in their letters in evidence) that the opponent, their client, was using the registered trade mark.

22. However, when I look for concrete evidence of the use which is said to have occurred during the period of time 10 February 2000 until 10 February 2003, all that I have in support of such use is unsupported assertions and a suspicion that if the use had been occurring in the way that is apparently claimed, it would be relatively easy to establish via objective evidence.  For instance, a one day course in Pilates costs, according to a brochure in evidence, $180 and the opponent states that he has had income of $100,000 revenue per annum under the trade mark.  In other words, approximately 555 people a year have, if they are charged at the same rate, done the course which is said to be offered under the trade mark GYROTONICS.  Thus, in the three year period in question some 1600 people should have been trained under (or with reference to) the GYROTONICS trade mark.  Of course, this number would be five times as high if the figure suggested by Hodgkinson McInnis Pappas was substantiated.  It thus seems to me that it should be quite simple to arrange for statutory declarations from prior clients of The Pilates Institute of Australia saying that they had paid for the GYROTONICS training course within the relevant period.

23. It would also be quite simple to put into evidence documents such as course materials, hand-outs etc or receipts or invoices showing the registered trade mark in use in the relevant period.

24. But there is no material before me which convincing shows the registered trade mark in use by the opponent or an authorized user during the period in question.

25. I am left with the nascent hypothesis that the opponent has believed that, since he has purchased one of the applicant’s GYROTONIC machines and has used it during a series of exercises, he must be providing a GYROTONICS course in his services performed in relation to that machine and hence has been using the registered trade mark.  The opponent’s statement that, “Since I was the first person to import specific equipment utilized to assist in providing the services, I have been the only one entitled and able to provide the services by reference to the GYROTONICS trade mark in the Australian marketplace,” tends to support such a conclusion.

26. These actions by the opponent do not, of course, necessarily betoken use of the registered trade mark any more than a driving instructor using a Ford automobile to train students provides (by reason only of the trade mark placed onto the vehicle in the factory and a mention of the FORD trade mark in his literature) a driving instruction service under the trade mark FORD.  Hence, he or she does not necessarily use the trade mark FORD in relation to driving instruction services. 

27. It is my estimate that the opponent’s claims as to use of the trade mark are, in view of the opponent’s evidence and statement quoted above, likely to be no more than an equivalent to the hypothetical driving instructor who uses a Ford vehicle for training student drivers and stating that he does so.  This does not inevitably amount to trade mark usage. 

28. Mr Rumore’s evidence of a complete absence of the trade mark GYROTONIC from the Pilates Institute of Australia’s signage, posters, brochures, promotional matter and other literature supports this hypothesis as does Mr Menezes’ comment to Mr Rumore to the effect that the Gyrotonic machine is only for use by some people as a part of their Pilates exercises.

29. However, whatever the opponent’s belief, he has not demonstrated his (or an authorized user’s) use of the trade mark GYROTONIC in relation to the services in respect of which the trade mark is registered during the relevant period to my satisfaction.

30. There is no need for me to consider the other opposition under subsection 92(4)(a) – such consideration would be largely redundant in view of the fact that I have found that there was no use of the trade mark by the opponent during the relevant period.

31. Accordingly, I direct that (subject to the outcome of any appeal against this decision) trade mark registration 752769 be removed from the register of trade marks.

    Costs

32. As the applicant has been successful in these proceedings, I order costs against the opponent at the official scale in relation to the opposition which I have decided.  It appears to me that the applicant could have filed one application for removal under both grounds and pursued either one of those grounds (or both) at the hearing.  Alternatively, as I have not decided the second application for removal, there are no costs to be awarded.

    Ian Thompson
    Hearing Officer

    Trade Marks Hearings
    16 January 2006